Weekly China Trademark News Updates

June 12, 2023

1. The “Skoda & Design” mark was recognized as well-known in a trademark invalidation against “Wan Si Ke Da in Chinese”

The Beijing High Court recently concluded an administrative trademark invalidation dispute between the the appellant the CNIPA, the appellee Skoda Automobile Co., Ltd. (“Skoda”), and Lijun Zhao, the third party in the original trial. The appeal was dismissed, and the first instance court judgment upheld.

Disputed Mark Reg. No. 28795275	Cited Mark 1 Reg. No. G869977	Cited Mark 2 Reg. No. 4513926

The issue of the case was whether the Disputed Mark’s registration violated Article 13, Paragraph 3 of the 2013 Trademark Law. The Beijing High Court found that the sales invoices, sales certificates, distribution contracts, relevant media reports, national library search reports, relevant advertisements and project cooperation submitted by Skoda from 2007 to 2019 can prove that before the Disputed Mark’s application date, the Cited Mark 2 has been continuously and widely used and publicized on “sedan” related goods and gained a relatively high reputation. It has been recognized as a well-known trademark on “sedan” related goods for many times. Therefore, the comprehensive evidence found in this case can prove that before the Disputed Mark’s application date, the Cited Mark 2 approved to be used on the product “sedan” has been widely known to the relevant public in China through long-term, extensive and continuous publicity and use of Skoda.

The Disputed Mark is composed of “Wan Si Ke Da in Chinese”, and the Cited Mark 2 is composed of the words “SKODA” and design. “Si Ke Da in Chinese” is the Chinese transliteration of “SKODA”. The evidence in this case can prove that “Si Ke Da in Chinese” and “SKODA” have formed a close correspondence after continuous public use by Skoda. “Si Ke Da in Chinese” in the Disputed Mark is the corresponding Chinese transliteration of “SKODA,” the distinctive part of the Cited Mark 2 constituted an imitation of the Cited Mark 2. Although the “cooking appliances and equipment; kitchen range hood” and other goods approved for use under the Disputed Mark were not identical or similar to the Cited Mark’s approved goods for “sedan” according to the CNIPA Classification, there is a wide range of overlap and intersection among the relevant public. Under the circumstances that the Cited Mark 2 has reached a well-known degree in “sedan” goods, and “Si Ke Da in Chinese” and “SKODA” have formed a close corresponding relationship, the Disputed Mark’s use on goods such as “cooking devices and equipment; kitchen range hoods” was likely to cause the relevant public to mistakenly believe that the Disputed Mark has a certain degree of connection with the Cited Mark 2, thereby weakening or diluting the distinctiveness of the Cited Mark 2 or improperly using Its market reputation that may damage Skoda’s interests in its well-known Cited Mark 2. Therefore, the Disputed Mark’s registration violated Article 13, Paragraph 3 of the 2013 Trademark Law and should be declared invalid. The first instance court was correct. The CNIPA’s appeal is dismissed.

2. “Dove in Chinese” was recognized as a well-known mark in an trademark invalidation against “Duo Fen in Chinese”

The Beijing High Court recently concluded an administrative trademark invalidation dispute between the appellant the CNIPA, the appellee Unilever Co., Ltd. (“Unilever”), and Yanlan Huang, the third party in the original trial. The appeal was dismissed and the original judgment was affirmed.

Disputed Mark Reg. No. 14123039	Cited Mark 1 Reg. No. 1280138	Cited Mark 2 Reg. No. 1410281	Cited Mark 3 Reg. No. 4597892

The issue of the case was whether the Disputed Mark’s registration violated Article 13, Paragraph 3 of the 2013 Trademark Law. The Beijing High Court found that Unilever’s publicity evidence submitted in the trademark review proceeding and the first-instance proceedings can prove that before the Disputed Mark’s application date, Unilever’s English brand “Dove” and “Duo Fen in Chinese” has formed a corresponding relationship. The personal care products of “Dove/Duo Fen in Chinese” have been promoted, marketed and sold on a large scale in China for many years, and have won many industry awards and achieved high popularity. The first instance court’s finding that the “Duo Fen in Chinese” mark had become well-known in the goods of “soap, shampoo, and bath lotion” before the Disputed Mark’s application date, met the requirements and legal basis under the 2013 Trademark Law on well-known trademark recognition.

Although “hair dryer, dryer for hair” used by the Disputed Mark is different from “soap, shampoo, and body lotion” of which the Cited Mark was famous for, they are in different classes according to the “CNIPA Classification.” However, based on the level of awareness of the relevant public, “soap, shampoo, and body lotion” and the “hair dryer, dryer for hair” approved and used by the Disputed Mark fell into to the category of personal care and cleaning products. These goods have a certain relationship in use. In view of the fact that the Cited Marks constituted well-known marks on the approved goods of “soap” “shampoo” and “bath lotion” before the Disputed Mark’s application date, and both the Disputed Mark and the Cited Mark are consisted of the Chinese word “Duo Fen in Chinese”, the Disputed Mark constituted a copy or imitation of the Cited Marks. Since the goods under the Disputed Mark were not identical or similar to “soap, shampoo, and body lotion” for which the Cited Marks were famous for, the Disputed Mark was a copy or imitation of the Cited Marks on goods that were different or dissimilar but was enough to make the relevant public to believe that there was certain association between the Disputed Mark and the Cited Marks, which diminished the distinctiveness of the Cited Marks, damaged the Cited Marks’ market reputation, or improperly used the Cited Marks’ market reputation. The Disputed Mark’s registration violated Article 13, Paragraph 3 of the 2013 Trademark Law, and the CNIPA’s grounds for appeal cannot be supported.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China